WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cantor Fitzgerald Securities, Cantor Index Limited v. Cantor Index Limited, KangTuo
Case No. D2012-0154
1. The Parties
The Complainants are Cantor Fitzgerald Securities of New York, United States of America, and Cantor Index Limited of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Kilpatrick Townsend & Stockton LLP, United States of America.
The Respondents are Cantor Index Limited and KangTuo of Hong Kong, China.
2. The Domain Names and Registrar
The disputed domain names <cantorint.com>, <ukcantor.com>, <ukcantorhk.com> and <ukcantor.net> are registered with Todaynic.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2012. On January 27, 2012, the Center transmitted by email to Todaynic.com, Inc. a request for registrar verification in connection with the disputed domain names. On January 29, 2012 and February 2, 2012, Todaynic.com, Inc. transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on February 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 28, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on February 29, 2012.
On March 1, 2012, the Center received an email communication from the Respondent Cantor Index Limited referring to a fifth domain name, <cantorfsa.com> (“the fifth domain name”). On March 2, 2012, the Center received supplemental filings from the Complainants requesting to add the fifth domain name into this proceeding.
The Center appointed Francine Tan as the sole panelist in this matter on March 14, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainants state that they and their affiliated companies (hereinafter referred to as the “Complainants”) are a well-known provider of global financial and technology services and, in particular, specialized services in the areas of computerized equity and fixed income capital markets and brokerage services. Since around 1945 when it was founded and over the next 50 years, the Complainants expanded into a global financial services firm serving clients worldwide. With approximately 1,400 employees and offices in more than 30 locations around the world, the Complainants offer its products and services to more than 5,000 institutional clients in the Americas, Europe, Asia, Australia, and the Middle East.
The Complainants’ CANTOR mark has been used in commerce since at least as early as 1947. The Complainants’ financial services have been provided worldwide under a family of trade marks incorporating the CANTOR trade mark e.g. CANTOR, CANTOR FITZGERALD, CANTOR EXCHANGE, CANTOR INDEX, CANTOR DIRECT, CANTOR GAMING, CANTOR CO2E, etc. The Complainants claim that significant sums have been spent advertising the CANTOR trade marks and maintaining their websites at domain names incorporating the CANTOR mark. As a result, the CANTOR marks have become well known in the financial community and they embody valuable reputation and goodwill belonging exclusively to the Complainants.
The Complainants own numerous United States (“US”) and Community trademark registrations and applications for the CANTOR marks. They also own numerous trademark registrations for CANTOR in other countries throughout the world, including Canada, Norway, Singapore, China, Japan, Australia and New Zealand.
The Complainants own and use a number of domain names for active websites that include the mark CANTOR, e.g. <cantor.com>, <cantorfx.com>, and <cantorco2e.com>, as well as country-specific web sites.
The Complainants state that they have promoted and offered their financial products and services in the UK under the CANTOR marks for almost three decades. Currently, they operate multiple business entities in the UK, including “Cantor Index Limited”. The Complainants have used and continue to use the mark CANTOR INDEX extensively in connection with financial services. Cantor Index Limited was established in 2000 as part of the Complainants’ Group and located in London.
The disputed domain names were registered on the following dates:
- <ukcantor.com> - on or around December 25, 2010;
- <ukcantor.net> - on or around June 8, 2011;
- <ukcantorhk.com> - on or around December 8, 2011; and
- <cantorint.com> - on or around December 29, 2011.
At the time the Complaint was filed, the websites at the disputed domain names were all posted under the business or trade name “Cantor Index Limited”. The Complainants state that although “Cantor Index Limited” is listed as the purported registrant for the disputed domain names <ukcantor.com>, <ukcantor.net>, and <cantorint.com>, the Complainants are not the registrant of these domain names, nor did they authorize their registration. The Complainants contend that the Respondents have sought to pass themselves off as the second Complainant. They claim that in addition to copying or imitating the layout and appearance of, and the text and logos on, the Complainants’ website located at “www.cantorindex.co.uk”, the Respondents have also posted on their websites “www.ukcantor.com” and “www.cantorint.com”, the London address of the second Complainant.
5. Parties’ Contentions
1. The Complainants submit, firstly, that the disputed domain names are confusingly similar and nearly identical to the Complainant’s well-known CANTOR mark, as they incorporate the mark CANTOR exactly and in its entirety. The mere addition of the country abbreviation “UK” does not diminish, but rather adds to the confusing similarity between the disputed domain names and the Complainants’ marks, particularly given the Complainants’ goodwill and reputation and the fact that Complainants have offices in the UK. Adding “UK” also fails to alleviate confusion in light of the Complainants’ own use of “UK” in conjunction with its CANTOR mark in the designation “Cantor Index UK,” and Complainant’s use of “UK” in its domain names such as <cantor.co.uk>, <cantorcfds.co.uk> and <cantorindex.co.uk>.
2. The Complainants submit, secondly, that the Respondents have no rights or legitimate interests in the disputed domain names, as the Complainants’ marks are so well known and recognized.
In any event, Respondents cannot demonstrate or establish rights or legitimate interests in the disputed domain names. There is no relationship between the Complainants and either Respondent. The Respondents have never been given any permission to register or use the disputed domain names. The Complainant does not sponsor or endorse the Respondents’ activities in any respect and has not provided its consent to Respondents’ use and exploitation of the CANTOR marks in the disputed domain names and accompanying websites. Moreover, the disputed domain names are not, nor could they be contended to be, nicknames of the Respondents or in any other way identified with or related to a legitimate interest of the Respondents. The Respondents are neither using the disputed domain names in connection with a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the disputed domain names. Rather, the Respondents appear to have registered and are using the disputed domain names solely for financial gain. The Respondents have blatantly attempted to create a false association between the Respondents and the Complainants by creating fraudulent websites that are close copies of the Complainants’ legitimate website. The Respondents’ websites appear to relate to the Complainants, when in fact there is no such connection. Such use of the disputed domain names based on the Complainants’ CANTOR marks to promote services unrelated to or competitive with the Complainants, and to trade upon the goodwill associated with the Complainants and their CANTOR marks, is not a legitimate interest or use.
The Respondents’ lack of any legitimate interest is further evidenced by the fact that, upon information and belief, the Respondents are using the websites located or previously located at the disputed domain names for a phishing scheme and to fraudulently derive financial benefits therefrom. The Respondents have placed at the relevant websites links to an application form for allegedly opening an account with the Respondents, which, on information and belief, is used to harvest confidential personal information of unsuspecting Internet users. Such use cannot constitute a bona fide use of the disputed domain names.
3. The Complainants submit, thirdly, that the Respondents have registered and are using the disputed domain names in bad faith, and this is supported by the following:
(a) the disputed domain names completely incorporate the Complainants’ CANTOR mark, and were registered long after the CANTOR mark became well known in the financial world;
(b) the Respondents used false or incomplete registrant information to register the disputed domain names;
(c) Internet users will likely mistakenly believe that the disputed domain names and associated websites are connected with the Complainants;
(d) upon information and belief, the Respondents are engaged in a phishing scheme to defraud Internet users;
(e) alternatively, the disputed domain names are used in an apparent attempt by the Respondents to pass themselves off as the second Complainant, Cantor Index Limited;
(f) the Respondents have sought to profit from the disputed domain names by using them to create an aura of affiliation with the Complainants and the goodwill associated with the CANTOR marks. The Respondents have sought to enhance this affiliation by copying one of the Complainants’ websites almost exactly and by making repeated uses of the CANTOR marks and name throughout the websites posted or previously posted at the respective disputed domain names;
(g) the Respondents’ registration and use of more than one domain name based on the Complainants’ CANTOR mark. Reference was made to the case of General Electric Company v. Normina Anstalt a/k/a Igor Fyodorov, WIPO Case No. D2000-0452 (“registration of several names corresponding to Complainant’s trademarks is sufficient to constitute a pattern of such conduct, and thus to constitute bad faith”).
The Respondents did not formally reply to the Complainants’ contentions.
6. Discussion and Findings
A. Preliminary Issues
A.1 Consolidation of Proceedings
The Complainants have requested consolidation of the proceedings for the disputed domain names, namely on the grounds of the apparent relationship between the Respondents and their joint control of the disputed domain names which resolve(d) to websites with identical or similar content, and that of expediency. The Complainants state that upon information and belief, the Respondents “Cantor Index Limited” and “KangTuo” are the same person or entity and/or are otherwise related to each other, and jointly control the disputed domain names which resolve or previously resolved to websites containing identical or nearly identical content. Furthermore, they claim as follows:
(a) The contact information used for at least three of the disputed domain names is similar, although the Respondents have sought to conceal their true identities and locations by giving incomplete and/or incorrect information. The registrant name and email address associated with three of the disputed domain names are the same: “Cantor Index Limited” and “[…]@hotmail.com,” respectively.
(b) The disputed domain names have the same Registrar.
(c) The disputed domain names have the same Internet Service Provider (ISP).
(d) The disputed domain names point to the same name servers, namely, ns3.01isp.com and ns4.01isp.net.
(e) Both <ukcantorhk.com> and <ukcantor.net> share the same IP address; and both <ukcantor.com> and <cantorint.com> share the same IP address.
(f) The disputed domain names were registered within approximately one year of each other.
(g) Upon information and belief, the Respondents are the same and/or are related to the respondents in two previous UDRP proceedings regarding the domain names <cantoruk.com> and <cantoruk.net> in which the Complainants were successful. (See Cantor Fitzgerald Securities, Cantor Index Limited v. Cantor Index, WIPO Case No. D2010-0807; and Cantor Fitzgerald Securities, Cantor Index Limited v. Cantor Index Limited, WIPO Case No. D2010-2204.) The domain names in those cases resolved to websites identical or nearly identical to the websites to which the disputed domain names resolve or recently resolved, and which are being used by the Respondents for the same misleading and fraudulent activities.
Having considered the Complainants’ submissions on this issue, the Panel is of the view that it would be equitable and procedurally efficient to allow the request for consolidation. There is a common grievance relating to the alleged misuse and misappropriation of the CANTOR trade mark in the disputed domain names, and the disputed domain names and corresponding websites appear to be subject to common control. (See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281.) The Respondents have been given the opportunity through the UDRP process to voice their objections (if any) against the Complainants’ request for consolidation of the proceedings, but did not.
In the absence of any other factor which would provide a basis for the Panel to decide otherwise, the Panel is of the view that consolidation of the proceedings would be appropriate in the circumstances.
A.2 Supplemental Filings
On March 2, 2012, the Center received supplemental filings from the Complainants requesting to add a fifth domain name into this proceeding. As the introduction of the fifth domain name was made after the expiry of the Response due date, the Panel is of the view that the fifth domain name should be excluded from consideration in these proceedings, bearing in mind the obligation of panelists under the Rules (paragraph 10(c)) to ensure that UDRP proceedings “take place with due expedition”. This ruling is without prejudice to the Complainants’ right to file a fresh Complaint in relation to the fifth domain name. (See Department of Management Services, State of Florida v. Digi Real Estate Foundation, WIPO Case No. D2007-0547.)
A.3 Language of Proceedings
Paragraph 11(a) of the Rules states that panelists may determine the language of the proceedings having regard to all the circumstances. The Panel is mindful of the considerations reflected in paragraphs 10(b) and (c) of the Rules, and also of the fact that the language requirements should not place an unduly heavy burden on the parties, nor should they result in inordinate delays in the proceedings.
The Complainants submit that English should be the language of the proceedings as:
(a) the registration agreement for the disputed domain names is offered in English;
(b) the website located at the domain name <cantorint.com> (as at January 23, 2012), as well as those located at the domain names <ukcantor.net>, <ukcantor.com> and <ukcantorhk.com> (as of January 13, 2012) are or were offered in English as well as another language;
(c) the Respondents have registered English language domain names with the intention of capitalizing on the Complainants’ well-known English language mark, and in view of the fact that the Complainants operate their business in the United Kingdom as well as in numerous other countries. The abbreviation “UK” has been purposefully included in three of the disputed domain names in order to target Internet users in the UK and/or English-speaking Internet users and cause them to believe that the Respondents’ websites at the disputed domain names are affiliated with or sponsored by the Complainants The Respondents’ contact information posted on the <ukcantor.com> and <cantorint.com> websites includes a UK address that is the London address of the second Complainant. This shows that the Respondents have attempted to portray themselves as a UK-based entity, either through the geographic terms used in the disputed domain names, or the contact information posted on the websites used or previously used in connection with the disputed domain names;
(d) upon information and belief, the Respondent Cantor Index Limited previously registered at least one domain name (<cantoruk.com>) through a registrar whose registration agreement was in English. That domain name was the subject of a successful UDRP proceeding in 2010 in which the Respondent Cantor Index Limited was found to have acted in bad faith. (See Cantor Fitzgerald Securities, Cantor Index Limited v. Cantor Index, WIPO Case No. D2010-0807);
(e) the Respondent Cantor Index Limited, upon information and belief, previously registered the domain name <cantoruk.net> which was used for a website offered in English and was the subject of a successful UDRP proceeding in which the Respondent was found to have acted in bad faith. (See Cantor Fitzgerald Securities, Cantor Index Limited v. Cantor Index Limited, WIPO Case No. D2010-2204).
The Complainants submit that the foregoing purposeful use of English by the Respondents with respect to the disputed domain names and associated websites, and in connection with other domain names incorporating the Complainant’s CANTOR mark, as well as the Respondents’ intentional attempt to associate the disputed domain names and accompanying website with the second Complainant which is located in the United Kingdom demonstrates that the Respondents have availed themselves of the English language, and/or are proficient in and can communicate in English, and/or have targeted English-speaking Internet users. Requiring the Complainants under these circumstances to proceed in the Chinese language would be burdensome and would unduly delay the proceeding.
Having considered the aforesaid, the Panel accepts that English would be the appropriate language of the proceedings as the Respondents appear from the evidence to be capable of corresponding in and understanding English, whereas there would be an unduly harsh burden on the Complainants to translate all the documents for the purposes of these proceedings. In the Panel’s assessment, the Respondents are not likely to be prejudiced should English be adopted as the language of the proceedings.
B. Substantive Issues
B.1 Identical or Confusingly Similar
The Complainants have established they have both common law and registered rights in respect of the CANTOR trade mark.
As to the next issue of whether the disputed domain names are confusingly similar to the Complainants’ trade mark, the Panel finds that they are indeed confusingly similar. The elements “UK” (a well-known abbreviation for the United Kingdom), “HK” (a well-known abbreviation for Hong Kong), and “INT” (a well-known abbreviation for “international”) are generic in nature and do not serve to distinguish the domain names <ukcantor.net>, <ukcantor.com>, <ukcantorhk.com> and <cantorint.com> from the Complainants’ CANTOR mark.
The Panel finds that paragraph 4(a)(i) of the UDRP has been satisfied.
B.2 Rights or Legitimate Interests
The Panel is of the view that the Complainants have established a prima facie case that the Respondents have no rights or legitimate interests in respect of the disputed domain names. The consensus view that has been established in previous UDRP panel decisions is that:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” (See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition.)
The Respondents have not filed any formal Response to refute the Complainants’ allegations in relation to this issue and in not doing so, the Panel has no basis upon which to find otherwise, than that the Respondents have no rights or legitimate interests in respect of the disputed domain names.
The Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
B.3 Registered and Used in Bad Faith
Paragraph 4(b) of the UDRP provides that the following circumstances, if found to be present, “shall be evidence of the registration and the use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel finds that the conduct of the Respondents - the choice of the disputed domain names (i.e. repeated registrations of various domain names incorporating the Complainants’ well-known CANTOR mark); the submission of false and/or incomplete information to the registrar and passing itself of as the second Complainant; and the manner in which the disputed domain names have been used by the Respondents including the appearance of a “phishing scheme” – reflect bad faith and an intention on their part to attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with the Complainants’ CANTOR mark as to the source, sponsorship, affiliation or endorsement of their websites or of a product of services on those websites.
The Panel therefore finds that the element of bad faith registration and use under paragraph 4(b)(iv) of the UDRP is present and therefore paragraph 4(a)(iii) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <cantorint.com>, <ukcantor.com>, <ukcantorhk.com>, and <ukcantor.net> be transferred to the Complainant Cantor Fitzgerald Securities.
Dated: April 1, 2012